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August 2015

August 11, 2015

The big news today in the business world is the announcement by Google that's it's doing a corporate restructuring and has set up a company called "Alphabet" that will be the parent company of Google.

It didn't take more than a few hours before this story appeared in the Jerusalem post about a local company, Alefbet Planners Ltd., that has asserted - for now, evidently, only in the press, not in court - that Google's Alphabet is infringing rights in Alefbet's name, which it says it has been using for 25 years. According to the article, Alefbet asserts that it has international clientele, to which it is known as "Alphabet".

Maybe that's the case, maybe not, but if Alefbet wants to stop Google from using "Alphabet", in Israel or anywhere else, it's going to have to prove its assertions, because even if there's a likelihood of confusion between the two names - more on that in a minute - Alefbet never registered a trademark in Israel, let alone in the USA or anywhere else. Sure, it may be able to assert "passing off", i.e. infringement of an unregistered mark, but to sustain such an action it will need to prove that its name has acquired a reputation that people associate with Alefbet. Good luck with that. When I googled "alfabet planners ltd", none of the top hits referred to this company. And there's no site, or even a domain registration, for alfabet.co.il, or any site for the company, apparently. It's hard to prove the existence of a reputation in a name that's invisible.

Even if Alefbet can prove such a reputation, it will need to show a likelihood of confusion. In the US alone, there are several hundred live and dead marks containing the word "alphabet". If those names weren't deemed to be confusing with one another, how would they be confused with the visually and aurally distinct "alefbet"? Moreover, according to the press release, Alefbet is "third largest planning, design and architecture company in Israel". That doesn't sound like Google's, or Alphabet's, niche. No confusion, no infringement.

The first rule of lawyering is never make a threat that you're not prepared to follow up on. Alfabet's empty threats merely confirm that which we already knew: Alfabet didn't avail itself of good legal counsel. If it had, it would have registered some trademarks by now.

That doesn't mean Google is necessarily off the hook. Given the large number of existing companies and products out there with the name "Alphabet" or a variation thereof in their name, Google has cause to be concerned. For example, Germany's Software AG has some software products named "Alfabet". But although one may wonders what Google's lawyers were thinking, it's still a good bet that Google's legal advisors looked into the matter and think that Google can prevail.

Unless, of course, the name "Alphabet" was chosen by the marketing department, without consulting the company lawyers. But that could never happen, right?